Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Sunday, 31 October 2004

* "Regulatory affairs -- herbal remedies" by Joanne Wheeler and Genevieve Michaux of Covington & Burling. This article takes a look at the EU's new rules that, many people claim, are intended to squeeze the vigour out of the alternative medicine market and unfairly benefit the "traditional" pharmaceutical industry.

* "Patenting gene sequences -- technical knockout for Myriad" by Herbert Smith lawyer Gareth Morgan. This piece looks at European Patent Office practice in the light of the EPO's rejection of the recent Myriad application.

February was a long time ago, but it was during that cold dark month that the European Court of Justice (ECJ) gave its ruling in Case C-218/01 Henkel KGaA v Deutsches Patent- und Markenamt. At the time, there was no official English translation and the IPKat, having tired of waiting for it, later forgot all about it. Well, it's here now. Sadly the ECJ website has still not managed to post an English translation (the court's ruling is available in just nine of the EU's 25 languages, while the Advocate General's Opinion is available in a mere eight). However, the English version is hiding here on Eur-Lex. This page contains a cute little paradox: by clicking the icon for "more information" you actually get less information.

In short, Henkel applied to register as a German trade mark for liquid wool detergent, the colour and shape of a three-dimensional bottle, complete with neck and stopper. The German Trade Mark Registry said "no you can't -- the mark doesn't tell consumers anything about the origin of the product". Henkel appealed to the Bundespatentgericht, which thought the mark descriptive as well as functional. That court however referred a raft of questions to the ECJ for a preliminary ruling. Most of these questions run in parallel with the questions considered by that court in the various Procter & Gamble and Henkel cases that the ECJ has ruled on this summer, on appeals relating to Community trade mark (CTM) applications. However, one extra point made here by the ECJ was that, when considering distinctiveness of an applicant's mark in the context of an application to register a national mark (i.e. not a pan-European CTM), you only have to consider the conditions in the country in which the application is made, not the EU as a whole.

ECJ rulings in the Procter and Gamble and Henkel 3D mark cases here and here (the 3D mark cases are at the top of the lists).
The best way to wash woollies: a domestic economist explainsAnother way of washing woollies here

Saturday, 30 October 2004

The IPKat has come across an interesting OHIM Board of Appeal decision. Mars applied to register the shape of its packaging for M&Ms Minis, a cylinder with an overhanging lid, as a CTM. Nestle opposed the application based on its national and international registrations of the cylindrical shape of its packaging. Points of interest include:

* The Board mapped out what it thinks the relationship between the absolute and relative grounds are as follows: the ECJ has said that there is a public interest in not monopolizing certain signs, particularly those which lack distinctive character or are descriptive and that descriptive signs in particular should be free for others to use. The ECJ has also said that highly distinctive marks enjoy broader protection than less distinctive marks and vice-versa. The interests protected in trade mark law overlap in so far as the elements for which there is a public interest in denying protection (in the context of registration) are also those which do not give a mark distinguishing power in the context of likelihood of confusion. When examining the likelihood of confusion, the scope of protection of the earlier mark and in particular their distinguishing power and the public interest in not protecting certain signs at the registration stage may have influence on the scope of protection. Thus, when distinctive character is examined in the context of likelihood of confusion, it is a normative and not an empirical criterion. The IPKat notes that the reverse approach has been rejected by the ECJ – the scope of confusion-based protection has been said to be irrelevant to judging the registrability of a mark on the absolute grounds. He also notes that the effect of the Board’s approach was essentially to conduct an analysis of the registrability of the mark under the absolute grounds in order to the degree of distinctive character of Nestle’s mark, even though the validity of the mark was not challenged. It is questionable whether this is an efficient approach.

* The ECJ’s judgment in Case C-408/01 Adidas v Fitnessworld was applied. Of particular interest is the fact that the Board equated use of a sign that is viewed as packaging with use that is seen as mere embellishment. The IPKat says that the application by the Board of the ECJ’s discussion of embellishment under Art.8(5) of the CTM Regulation (40/94) in Adidas v Fitnessworld goes to show that embellishment is more than just a trade mark use issue since trade mark use when two marks are being compared is only relevant to infringement and not to registration cases such as this one.

* In the course of its decision, the Board discussed the application of descriptiveness, distinctiveness and functionality to shape marks.

Friday, 29 October 2004

What a great day it's been for the Nairobi Treaty on the Protection of the Olympic Symbol. First the IPKat hears of the accession of the Kyrgyz Republic (see earlier blog today); next it's the turn of Croatia, a smaller but rather more successful nation of athletes, to do the same. Infringers, counterfeiters and small honest traders who have used the word "Olympic" from time to time but haven't yet been sued -- watch out! You'd better stop by 20 November 2004 or you can expect to pay the consequences ...

WIPO has just informed the IPKat today that the Kyrgyz Republic has notified it of its intention to be bound by the Nairobi Treaty on the Protection of the Olympic Symbol with effect from 18 November 2004. As of a fortnight ago, 43 states were signatory to this treaty. Kyrgyzstan has only ever won one medal at the Olympics; this was in Sydney 2000 when Aidyn Smagulov picked up a bronze medeal (and a good deal more) in one of the weight-lifting competitions.

Kyrgyzstan's Olympic profile here and hereAn easier way to get gold in Kyrgyzstan than competing in sports events here

Yesterday in Case C-53/03 Synetairismos Farmakopoion Aitolias & Akarnanias (Syfait) and Others v Glaxosmithkline AEVE Advocate General Francis Jacobs gave his Opinion as to whether a drug company may plead the threat of parallel trade as an excuse for limiting the amount of IMIGRAN, LAMICTAL and SEREVENTIT it sends to pharma wholesalers in "cheapo" regimes. In his conclusion he recommends that the European Court of Justice rule as follows:

"(1) A pharmaceutical undertaking holding a dominant position does not necessarily abuse that position by refusing to meet in full the orders sent to it by pharmaceutical wholesalers only by reason of the fact that it aims thereby to limit parallel trade.
(2) Such a refusal is capable of objective justification, and thus of not constituting an abuse, where the price differential giving rise to the parallel trade is the result of State intervention in the Member State of export to fix the price there at a level lower than that which prevails elsewhere in the Community, given the combined circumstances of the European pharmaceutical sector at the current stage of its development, and in particular:
–- the pervasive and diverse State intervention in the pricing of pharmaceutical products, which is responsible for price differentials between the Member States;
–- the regulation by the Community and the Member States of the distribution of pharmaceutical products, which establishes nationally demarcated obligations upon pharmaceutical undertakings and wholesalers to ensure the availability of adequate stocks of those products;
–- the potentially negative consequences of parallel trade for competition, the common market, and incentives to innovate, given the economic characteristics of the pharmaceutical industry;
–- the fact that end consumers of pharmaceutical products may not in all cases benefit from parallel trade and that public authorities in the Member States, as the main purchasers of such products, cannot be assumed to benefit from lower prices, given that they are themselves responsible for fixing prices within their territories".

The IPKat expects that the ECJ will accept this brand owner-friendly position, which appears to fit in with Joined Cases C-2/01 P and C-3/01 PBundesverband der Arzneimittel-Importeure eV and others v Bayer AG, in which a pharma company which told its national distributing subsidiaries not to fulfill all orders placed by potential grey-goods dealers for its ADALAT/ADALATE products was held not to be an unlawful agreement under Art.82 EC Treaty.

Kats are not known to be the most musical of mammals, but on this one occasion the IPKat permits himself to blow his trumpet a little.

According to the IPKat blog's hit-counter, on the week ending 17 October the IPKat weblog received 1,605 hits -- the first time he's ever topped the 1,600 mark in a single week. The following week (w/e 24 October), the blog received a staggering 1,730 visits. In September we hosted 6,120 hits (that's the second time we've broken the 5,000 barrier) and the site looks certain to exceed that figure before October is out. All the IPKat can say is "Thank you, all of you, for visiting me. Please keep doing so; you are always welcome".

Sweet & Maxwell has recently been conducting a "fire sale", with some very respectable titles available at substantially reduced prices (though that's not to say they're cheap: law books never are!). Among the titles that caught the IPKat's eye are

* Free Movement of Goods in the European Community, by Peter Oliver (assisted by Malcolm Jarvis). This book, published only last year, combines a scholarly approach to this highly IP-sensitive subject with a view to the needs of practitioners and their clients. Peter Oliver, as Legal Adviser to the European Commission, is an an ideal position to gauge the way the wind blows when it comes to Brussels policy-making, while barrister Malcolm Jarvis has a commercial and competition practice that focuses heavily on the movement of goods in general. It has long puzzled the IPKat that this book, now in its fourth edition, has not been as widely used by the IP fraternity as it might have been, particularly since the competition lawyer's perspective on "exhaustion of rights" is one which we IP enthusiasts need frequently to be reminded of.

* Terrell on the Law of Patents, by Simon Thorley QC, Richard Miller, Guy Burkill and Colin Birss (15th edition, 2000). This edition is shortly to be superseded (in March 2005) by a fresh edition which will, it is assumed, be encompassing the amendments made by the Patents Act 2004 and the two recent House of Lords decisions in Sabaf and Kirin-Amgen. Nonetheless, for those who have not yet got it but who want to complete their set of Terrells, the 15th edition may still hold attractions. Under the stewardship of preeminent patent counsel Simon Thorley and his team, this book is a great improvement on those earlier editions which, to many of us, seemed to consist largely of paraphrases of the legislation spiced with the occasional delphic utterance.

The BBC reports that the BBC is investigating similarities between Stromberg, shown on ProSieben, and its hit show The Office. There are allegedly similarities between the central characters in the two shows as well as two other characters. The German channel has denied charges of copying, pointing out that the programme is based on German humour that would not appeal to British tastes. "We take our formats and programmes very seriously so we are looking in to it," said a BBC spokeswoman.

The IPKat issues a gentle reminder that ideas aren’t protected under copyright law. He also wonders how easy it would be to prove copying, since The Office is meant to resonate with stereotypical (albeit exaggerated) office politics that are familiar to many workers across the world.

Thursday, 28 October 2004

Last night, in the sumptuous surroundings of the Middle Temple Hall, the IPKat was privileged to enjoy the company of Lord Justice (Sir Robin) Jacob, when he chaired the October Debate of TIPLO (the Intellectual Property Lawyers' Organisation). Sir Robin was warmly commending him to read his judgment in a patent case decided last May, Rockwater Ltd v Technip France SA (formerly Coflexip SA). The validity of a patent depends upon it possessing "inventive step", that is to say, that a "man skilled in the art" could not have made the invention himself other than through the use of some inventive or creative faculty. In his judgment Sir Robin says:

"The "man skilled in the art" is invoked at many critical points of patent law. The claims of a patent must be understood as if read by that notional man – in the hackneyed but convenient phrase the "court must don the mantle of the skilled man." Likewise many questions of validity (obviousness, and sufficiency for instance) depend upon trying to view matters as he would see them. He indeed has statutory recognition – Arts. 56, 83 and 100 of the EPC expressly refer to "the person skilled in the art."

It is settled that this man, if real, would be very boring – a nerd. Lord Reid put it this way in Technograph v Mills & Rockley [1972] RPC 346 at p.355 : "… the hypothetical addressee is a skilled technician who is well acquainted with workshop technique and who has carefully read the relevant literature. He is supposed to have an unlimited capacity to assimilate the contents of, it may be, scores of specifications but to be incapable of scintilla of invention. When dealing with obviousness, unlike novelty, it is permissible to make a "mosaic" out of the relevant documents, but it must be a mosaic which can be put together by an unimaginative man with no inventive capacity."

The no-mosaic rule makes him also very forgetful. He reads all the prior art, but unless it forms part of his background technical knowledge, having read (or learnt about) one piece of prior art, he forgets it before reading the next unless it can form an uninventive mosaic or there is a sufficient cross-reference that it is justified to read the documents as one.

He does, on the other hand, have a very good background technical knowledge – the so-called common general knowledge. Our courts have long set a standard for this which is set out in the oft-quoted passage from General Tire v Firestone Tire & Rubber [1972] RPC 457 at 482 which in turn approves what was said by Luxmoore J in British Acoustic Films 53 RPC 221 at 250. For brevity I do not quote this in full – Luxmoore J's happy phrase "common stock of knowledge" conveys the flavour of what this notional man knows. Other countries within the European Patent Convention apply, so far as I understand matters, essentially the same standard.

The man can, in appropriate cases, be a team – an assembly of nerds of different basic skills, all unimaginative. But the skilled man is not a complete android, for it is also settled that he will share the common prejudices or conservatism which prevail in the art concerned. None of the above is controversial. However, sometimes the requirement that the skilled man be uninventive is used by counsel for a patentee in an attempt to downgrade or dismiss the evidence of an expert called to say that a patent is obvious – "my witness is more nerdlike than his" is the general theme. I do not find this a helpful approach. It is frequently invoked and Mr Waugh QC invoked it in this case in an effort to downgrade Rockwater's expert evidence on obviousness given by Professor Witz. Mr Waugh said his witness, Mr Nash was more appropriately qualified than Professor Witz, that the latter, because he had patents in his name "was of an inventive turn of mind."

Now why is this so important? It's because Lord Justice Pill took exception to Sir Robin's use of the word "nerd". In his very short judgment he said:

As to the "man skilled in the art", he is described by Jacob LJ as a 'nerd' (paragraphs 7 and 11) and as "not a complete android" (paragraph 10), which suggests that he is part of the way to being an android. A 'nerd' is defined in the Concise Oxford Dictionary (10th Edition 1999) as "a person who lacks social skills or is boringly studious" and an 'android', in the same work, as "(in science fiction) a robot with a human appearance". I hope that those working in this field will not regard "men skilled in the art" as figures from science fiction who lack social skills. Jacob LJ, will think me less than supportive of the development of the language of the law but I do respectfully prefer, for its clarity, Lord Reid's terminology cited at paragraph 7 of the judgment".

The IPKat overheard a suggestion that the true definition of "nerd" is "anyone who looks up the word 'nerd' in a dictionary. But, setting that thought aside, the IPKat is curious to know if his readers share his feeling that a nerd is really something quite different: a person who prefers the company of his computer and his reference books to that of humans and who rejoices in the finer points of technology for their own sake rather for the benefit they may bestow upon mankind. So, if you have any thoughts on the matter, please post them below.

... and here's even more from Ananova: Berlin chef Gero Winiarski has developed a German version of the Atkins diet - based on pork knuckles, sauerkraut and beer. At the heart of the plan is the Schweinshaxe, a massive knuckle of pork that comes from traditional Bavarian style of cooking. It is usually served with dumplings and sauerkraut or, in some regions, red cabbage. While Haxe is traditionally associated with big-bellied Bavarian men, Winiarski says the dish can actually help people shed pounds.Guests at his restaurant are told to ditch the dumplings so they can have the meal with a clear conscience. Winiarski also claims to have developed a special way of roasting the knuckle that takes almost all of the fat out of it.

The IPKat notes that there's no intellectual property right in a bare idea. Though specific recipes will enjoy copyright protection, the three-dimension food that results from using the recipe isn't an infringement under copyright law (in the UK at any rate: is it different elsewhere?). If Winiarski wants his special way of roasting the knuckle to remain a secret, he is best advised to keep strangers out of kitchen.

More on the Atkins diet here and here ...
... and on the Katkins diet here and hereFatkins diet here (not for the faint-hearted)

Ananova (citing Las Ultimas Noticias) brings news of yet more so-called "conceptual art". Chilean artist Paula de Solminihac is offering her audience a free dinner as part of her new exhibition: the dirty plates, cutlery and leftovers will then make up part of the display. Ms Solminihac also plans to film and photograph her guests eating at the Galeria Animal in Santiago.

Each person will be given a closed box filled with 18 cubes of both savoury and sweet food that will look the same. People won't know what taste to expect until they put the food in their mouths. Said Ms Solminihac:

"My intention is to establish new relations with the viewer; in this case the viewer is part of the work of art, transforming it by eating and then finishing it. The leftovers of the dinner, the table cloth, the food bites and the used cutlery will also be displayed after the meal is over."

The IPKat doubts he'll be much use in this experiment, since he never leaves anything on his plate. More seriously, this particular art-concept raises some tricky questions. First, who is the "author" of the left-overs, Ms Solminihac or the individual diners? Secondly, what rights, if any, may vest in an assembly or compilation of dirty plates and leftovers? Thirdly, is the resulting film a "performance" in respect of which the consent of those filmed may need to be secured?

Wednesday, 27 October 2004

The November 2004 issue of Sweet & Maxwell's monthly European Trade Mark Reports has now been issued, a little ahead of its cover date. This issue carries headnotes and full judgments in another 11 decisions, including the following decisions which appear in English for the first time:

* Esso SA v Association Geenpeace France and Internet Rf SA (Tribunal de Grande Instance de Paris): use of ESSO and E$$O on the Greenpeace website, in the context of that organisation's criticism of Esso's environmental policies, was a denominative use of Esso's mark that did not infringe (for another example of the use of E$$O on an anti-ESSO site click here ).

* SRIRIT Trade Mark (Patent Office, Poland): when considering the similarity of trade marks, the fact that two marks -- in this case SPIRIT and ESPRIT -- have the same conceptual meaning can be disregarded when those meanings are not apparent to ordinary Polish consumers.

* Immofinanz v Immofina (Supreme Court, Austria): comparison of trade names, for unfair competitionp purposes, requires consideration not only of their similarity but also of the question whether the claimant's name has acquired any secondary meaning.

* DORWIN Trade Mark (Turkish Court of Appeals): whether WIN and DORWIN too dissimilar for the proprietor of the well-known WIN mark to sustain an application to oppose the DORWIN application.

Remember: if you have, or know of, a really interesting European trade mark case that you feel should be reported in the ETMR, just let the IPKat know.

Tuesday, 26 October 2004

The BBC reports that Elvis Presley has topped the list of highest-earning dead celebrities with an annual income of $40 million. This revenue comes not only from copyright royalties, but also from merchandising activities. The full list, compiled by Forbes.com is as follows:

Ananova brings news of a bouncing Romanian baby who, having been born in his parents' car as they rushed to hospital, is to be named after the well-known intellectual property right-cum-fictional personality Speedy Gonzales. This will no doubt please the child if, later in life, he needs to fall back on the "own name" defence to an action for trade mark infringement under the Trade Marks Act 1994, s.11(2).

List of European and UK trade mark registrations for SPEEDY GONZALEZ here

An artist is planting a vineyard in a disused church in Chatham, Kent reports the BBC. The project will act as a metaphor for regeneration in the town according to the artist. The IPKat wants to know, what type of copyright work is this: Artistic work? Sculpture? Work of artistic craftsmanship?

This isn’t an IP story and that’s what makes it an IP story. The Register reports that New York Attorney General Eliot “the Blitzer” Spitzer is trying to crack down on a practice known as “payola”, which is when record companies use middle-men to pay radio stations to play their songs. It is illegal for radio stations to play specific songs for a reward unless they inform listeners that a payment has been received and Spitzer has served subpoenas on various major record companies in a bid to prove that the practice is taking place. So what’s the IP angle, the IPKat hears you cry. Well, the article concludes with the statement that

“His apparent investigation into the music labels comes as they are trying to take the high road by suing thousands of their customers for piracy. Much to the labels' dismay, their most recent sales figures show that revenue is actually on the rise despite still rampant file-trading and a massive increase over the past two years in broadband connections. Myriad music executives this week were seen covering their eyes and ears in a show of solidarity against these sales gains”.

Even though “payola” has nothing to do with file-sharing, the record company’s heavy-handed approach in enforcing their copyright has brought music “piracy” to the table in an area which it would ordinarily have little to do with.

Monday, 25 October 2004

Leading scholar Alison Firth gave an entertaining IP Chat at the Queen Mary Intellectual Property Research Institute (QMIPRI) today. The IP Chats are a regular monthly feature of the QMIPRI programme, giving scholars and students a chance to sound off about their research topics, latest legal developments as well as the academic side of IP.

At today's chat, Alison raised the issue of the great divide between "misrepresentation" and "misappropriation" as the most popular theories that, many academics claim, govern the protection of statutory and non-statutory IP rights -- particularly those rights that don't appear to sit comfortably in any categorisation such as the moral rights recognised by copyright law. The discussion focused on, among other things, the viability of further categories beyond the "misrepresentation/misappropriation" divide: the category of "interference" was raised as one possibility.

Readers are invited to let the IPKat know what they think on this fascinating topic.

Here's an interesting decision on patents from the Court of Appeal, decided last Thursday. In the latest installment of Celltech R&D Ltd v Medimmune Inc [2004] EWCA Civ 1331. Medimmune was appealing against the refusal of its application for a stay of Celltech's action against it. Celltech and Medimmune were party to patent licence under which Medimmune agreed to pay royalties for products sold or manufactured that would, but for the licence granted, infringe Celltech's "Adair" patents. Clause 13 of the agreement conferred jurisdiction relating to liability issues upon the English courts. Celltech subsequently alleged that Medimmune infringed its US "Adair 2" patent when it made and sold its Synagis treatment for respiratory tract infection in the US and sought royalties under the licence agreement, whereupon Medimmune commenced US proceedings for declarations that US Adair 2 was invalid and that Synagis did not infringe it.

Celltech, having applied to the US court to decline jurisdiction over the claim for a declaration of non-infringement, then sued Medimmune in England, while Medimmune applied for a stay of the English proceedings pending the outcome of the US action. Mr Justice Laddie, ruling that the licence agreement conferred jurisdiction on the English courts, refused to stay the English proceedings.

The Court of Appeal has now dismissed Medimmume's appeal. In its view Clause 13 conferred jurisdiction to determine issues relating to the performance of the agreement upon the English courts, which would have no difficulty in applying the appropriate foreign law in respect of the scope of a foreign patent. The commercial basis of clause 13 was to select a jurisdiction with a specialist, experienced court that could determine all issues of infringement in relation to patents from many different jurisdictions.

The IPKat cannot fault the Court of Appeal's logic. The choice of a single arbitrary locus for patent dispute litigation adds a dose of practical reality and certainty to the dispute resolution process which, if respected by the parties, should save time, trouble, effort and money. It's good to see exclusive jurisdiction clauses enforced in situations such as this.

Other English courts that are less often invoked for dispute resolution purposes here, here and here

Sunday, 24 October 2004

This curiosity appeared today, courtesy of The Register. Steve Ballmer this week came up with a novel and somewhat paradoxical explanation for high levels of software piracy in emerging economies. Hardware, he says, is too expensive. What these people need, he said, is a $100 computer.

"One way to stem piracy is to offer consumers in emerging countries a low-cost PC. There has to be... a $100 computer to dow-market in some of these countries. We have to engineer (PCs) to be lighter and cheaper".

Take into account the paraphrase and the nip and tuck and it's pretty clear that the quote isn't exactly as it left its mother (says the piece in The Register), but in any event he is talking about piracy as being Microsoft's biggest problem, and he is talking about ultra low cost PCs being the way forward for emerging markets. He's certainly right about how a $100 PC would be a great enabler, but it's entirely unclear how this would stop people who pirate Microsoft software because they can't afford it from just carrying on.

There is however no reason to reduce prices, says Ballmer, because most of the people can't afford PCs, so obviously don't steal software, whereas the people who can afford PCs are "relatively affluent" and can therefore afford software. And "those affluent people cannot pay, so they don't pay," he adds bafflingly. Assuming he meant to say something opposite, then you could kind of pursue the logic. There's no point in cutting prices because the people who have computers can afford to pay, but just won't. But if the people who don't currently steal software because they can't afford computers suddenly can afford computers because they're $100, then... Well seeing they still can't afford software, won't they start stealing it?

The IPKat wonders if (i) there's anyone out there who can explain the logic of this apparent paradox to him; (ii) anyone can tell him exactly what "dow-marketing" is. Is it something to do with the Dow Market?

* Case T-16/02 Audi AG v OHIM (Court of First Instance): ruling on distinctiveness of the TDI trade mark which also considers whether OHIM Board of Appeal rulings can be impugned on the basis of facts that were not relied on in the course of Office procedures.

* Halifax plc v Halifax Repossessions Ltd (Court of Appeal): on whether a trial judge has power to order a company to change its name, in the absence of a special resolution under the Companies Act 1985.

* Hays & Robertson plc v Kangol Ltd (Court of Appeal): on whether a termination clause in a trade mark licence could be rendered ineffective by the licensee making a late payment under the licence.

The IPKat reckons that IP&T is a pretty good option for lawyers who like their case law in the form of hard copy and who don't want to subscribe to more than one set of specialist law reports -- but this series will never really catch on till it gets cited in reported cases as often as its main rivals, Sweet & Maxwell's Fleet Street Reports and Reports of Patent Cases.

The IPKat has spotted that the four hugely important rulings of the European Court of Justice on database right are expected on Tuesday 9 November. The four cases are Case C-203/02 British Horseracing Board and Others and the three Fixtures Marketing cases, Cases C-46/02, C-338/02 and C-444/02 Fixtures Marketing respectively. The IPKat will bring you news of these cases as soon as they're available, together with links to the full text of the ECJ's ruling.

The controversial Database Directive hereSome comments on the Advocate General's Opinions here, here and hereIPKat comment: click here and scroll down to entry for 8 June 2004.

The IPKat is pleased to report that you don't have to be a contestant in the 'Who Wants to be a Millionnaire?' (WWM) quiz show if you want to be a millionnaire -- if you are a lawyer whose clients are greedy or principled enough to litigate, you may well end up a rich man without having to know the capital of Ipkatistan, the freezing point of mercury or the names of ZsaZsa Gabor's husbands. The preliminary skirmish between WWM's developers and producers Celador and no fewer than three people who claim the notion was originally theirs can now be read on BAILII's excellent online transcript service. The three -- Alan Melville, Timothy Leavey Boone and John William Baccini -- claim copyright infringement and breach of confidentiality. Celador denied their claims and sought summary judgment against them, with mixed results.

The IPKat predicts that, given the riches enjoyed by the winners in these disputes, they will not be settled without some pretty bloody litigation. Also, given that UK copyright law does not (yet) protect TV programme formats), be prepared for some fierce lobbying. Watch this blog for further developments.

Saturday, 23 October 2004

The Japan Times reports that the Japanese Patent Office has refused to register the names of 35 famous people as trade marks for pinball machines. The names include Adolf Hitler, the Hebrew prophet Moses, Kukai, a Buddhist priest, Prince Shotoku, and three samurai Takeda Shingen, Saigo Takamori and Oishi Kuranosuke. The refusal was based on the fact that the registration of certain of the names would be counter to Japan’s pacifist constitution and the provision of Japanese trade mark law which prohibits the registration of trademarks that might be considered to harm public order and morals.

The IPKat’s masters have already considered what the best approach is to the registration of politically offensive trade marks at [2004] EIPR 327. If anyone would like a copy of the article, please email theipkat@yahoo.co.uk.

Philips, a Dutch company, made and sold electric rotary shavers and owned UK trade mark 1533452 (the 452 mark)for electric shavers (Class 8). The mark was a two-dimensional picture of the top portion of a three headed rotary electric shaver. The overall picture was that of an inverted equilateral triangle, with the three heads sitting within a raised faceplate of clover leaf design. Philips also owned three other marks comprising three circles within an inverted equilateral triangle. Remington also made and sold electric shavers.

In February 2000, Philips sued Remington for trade mark infringement, alleging that Remington (i) sold three headed electric rotary shavers with heads identical or confusingly similar to the 452 mark and (ii) depicted those heads on the packaging in which the shavers were supplied. Remington denied infringing and counterclaimed that the 452 mark and the claimant’s three other marks were invalid since they were functional. Philips argued that the only parts of either the plain or the cloverleaf plate which performed a technical function were the three circular areas of faceplate immediately surrounding the three cutting heads and that the residual areas of the faceplate were non-functional, being parts of the design that were not attributable to the achievement of a technical result. The main issue for Rimer J to determine in these proceedings was whether the 452 mark consisted exclusively of the shape of goods which was necessary to obtain a technical result under the Trade Marks Act 1994 s.3(2)(b).

Rimer J dismissed Philips' infringement claim and ordered that all of Philips' marks be revoked. He held, in particular, that:

* Section 3(2)(b) presented a bar to registration which, unless it could be overcome, was fatal.

* The preferred view of s.3(2)(b) was that, provided each feature of a shape as a whole performed a technical function, it didn't matter that some minute elements of it might not themselves contribute to that performance. In this case the clover leaf was a feature which served the essential technical functions of (i) stretching the skin and (ii)raising the hair, to obtain an effective and painless shave and it was not accepted that there were any parts of the clover leaf that did not contribute to the technical result. Thus the whole of the faceplate, including the clover leaf, contributed to the overall technical objective of giving the user a smooth, effective and comfortable shave and consequently, the whole of it was attributable to obtaining that technical result.

* In those circumstances, since s.3(2)(b) was a barrier to registration of the 452 mark. It followed that its registration was invalid. Furthermore, since the other three marks were minimalist representations of shapes whose essential features were solely attributable to obtaining the technical result, they too were excluded from registration by s.3(2)(b).

The IPKat has not yet read the full transcript, but wonders how much, if anything, this decision adds to the extensive jurisprudence generated by this issue, including the reference to the European Court of Justice in Case 299/99 Philips v Remington.

The IPKat would like to draw your attention to an interesting problem posed in the INTA Trademark [sic!] List. The issue is basically whether a mark owner can make his own trade mark generic in order to block others from registering it.

The IPKat says keep an eye out for answers to this one, which are already trickling in on the List.

Thursday, 21 October 2004

The IPKat thanks Jane Mutimear (Bird & Bird) for tipping him off that the long-awaited House of Lords decision in Kirin-Amgen Inc and others v Hoechst Marion Roussel Limited and others; Kirin-Amgen Inc and others v Hoechst Marion Roussel Limited and others [2004] UKHL 46 is now available here. The leading speech is a majestic opinion by Lord Hoffmann, who, inter alia, effectively deconstructs and rewrites the entire UK law and practice in dealing with two of the biggest and most heavily litigated issues in patent law today:

(i) in what circumstances does a person who does not replicate an invention as described in the claims of a patent infringe that patent and

(ii) how do you know when those circumstances occur?

The case is too long and complex to be conveniently summarised on a weblog, but the IPKat is delighted to serve up some of the most significant bits for your delectation (all references are to paragraph numbers in Lord Hofmann's speech):

* Pre-history. At paras 18 to 22 there is a succinct summary of the law of inexact patent infringement as it stood in the UK and Germany before the adoption of the European Patent Convention

* The Protocol. At paras 23 to 26 his Lordship describes the rationale of the Protocol to Article 69 of the Convention, which reads:

"Article 69 should not be interpreted in the sense that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties."

This Protocol is a compromise between the wish to provide certainty by interpreting patent claims literarlly and the need to secure a just result by looking at what it would be fair for the patent to protect, regardless of the exact form of words used to couch its claims.

* The "purposive" approach. At paras 27 to 35 his Lordship reviews the evolution of the UK courts' approach to claims construction, both before and after the seminal speech of Lord Diplock in Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183.

* Equivalents and their equivalents? At paras 36 to 44 the US doctrine of equivalents is discussed. Lord Hoffmann concludes:

"Since the Catnic case we have article 69 which, as it seems to me, firmly shuts the door on any doctrine which extends protection outside the claims. I cannot say that I am sorry because the Festolitigation suggests, with all respect to the courts of the United States, that American patent litigants pay dearly for results which are no more just or predictable than could be achieved by simply reading the claims".

* Is Catnic in accordance with the Protocol to Article 69? Paras 45 to 48: in a word, yes.

* Does the UK version of the doctrine of equivalents provide any help? In paras 49 to 52 Lord Hoffmann reviews his own decision in Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181 and that of the Court of Appeal in Wheatley v Drillsafe Ltd [2001] RPC 133. This approach, incorporating what are often called "the Improver questions" or "the Protocol questions" is basically one with which the judges are comfortable, despite its limitations.

* Review of the trial judge's decision: paras 53 to 75 (ending with a review of German and Dutch law).

* Review of the Court of Appeal decision: paras 76 to 77. Lord Hoffmann approves of the Court of Appeal's approach to construction of the patent which, unlike that of the trial judge, actually pays attention to the patent's claims.

* Old test -- valid but unhelpful? From paras 78 to 85 it seems that the applicability of the "Protocol questions" decreases as the factual parameters of the technology to which they are applied becomes ever more complex.

The rest of his Lordship's speech deals with issues of novelty (paras 86 to 101), insufficiency (102-109), breadth of claims (110-117) and sundry technical issues (118-133).

The moral of the story seems to be that, when interpreting patent claims, keep the claims at the heart of your interpretation. As Lord Hoffmann says:

" 72. This is perhaps an appropriate point at which to mention what may appear to be a difference between the German, United Kingdom and Netherlands approach to these questions. It used to be thought that despite article 69 and the Protocol, there remained serious differences between the approaches to construction of the United Kingdom on the one hand and Germany and the Netherlands on the other. And it is true that in the early years of the EPC, there was a view in the German and Netherlands courts that the Convention had made no difference and that the Protocol entitled the courts of Contracting States to go on deciding the extent of protection exactly as before. The position in the Netherlands is described by Professor Brinkhof in the article "Is there a European Doctrine of Equivalence?" (2002) IIC 911 to which I have already referred.

73. But I do not think that this is any longer true. The highest courts in both Germany (see Batteriekastenschnur [1989] GRUR 903, 904) and the Netherlands (see Ciba-Geigy/Oté Optics (1995) Nederlandse Jurisprudentie 39) have said that the effect of article 69 is to give the claims what the European Patent Office has called a "central role": see BAYER/Plant growth regulating agent [1990] EPOR 257, 261. The Bundesgerichtshof said in the Batteriekastenschnur case that the claims are no longer merely a point of departure but the decisive basis (maßgebliche Grundlage) for determining the extent of protection".

The IPKat marvels at Lord Hoffmann's clarity of thought and lucidity of expression. Does anyone in the UK seriously advocate exchanging this sort of quality for an unknown and untried Community patent court?

The IPKat has espied two fresh trade mark decisions, delivered by the European Court of Justice (ECJ) only a couple of hours ago. They are

* Case C-447/02 P KWS Saat AG v OHIM . KWS Saat applied to register as a Community trade mark the colour orange for seeds, treatments for seeds and for forestry products (Classes 7, 11 and 31). OHIM and the Court of First Instance (CFI) rejected the application: the colour was devoid of distincctive character for those products, since it was neither original nor even unusual for them. KWS Saat appealed to the ECJ, which today dismissed that appeal. The grounds of appeal were procedural and the judgment contains no striking statements of new law. However, the decision shows that it is a waste of time to try to persuade the ECJ that the CFI has applied a stricter test of distinctiveness for the applicant's colour mark than for is applied to non-colour marks when all the CFI has basically done is to apply the principles enunciated by the ECJ in its earlier ruling (also, incidentally, relating to the colour orange) in Case 104/01Libertel.

* Case C-64/02Erpo Möbelwerk GmbH v OHIM. This time the appeal came from OHIM, incensed that the CFI should have allowed the registration as a Community trade mark of the slogan DAS PRINZIP DER BEQUEMLICHKEIT (German for "The Principle of Comfort") for various classes of goods, including furniture. The ECJ concluded that the CFI reached its decision that the sign was registrable without applying more lenient criteria of distinctiveness than those stipulated by the ECJ in its earlier case law. Strangely, the ECJ did not cite any of its big decisions on the distinctiveness of word marks (BABY-DRY, CHIEMSEE, DOUBLEMINT, POSTKANTOOR, BIOMILD), preferring to state its position as stated in recent 3-D trade marks cases involving detergent tablets. OHIM did win one small battle, though. The ECJ held, at para.46, that

"by holding ... that a trade mark is not devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation 40/94 unless it is demonstrated that the phrase concerned is commonly used in business communications and, in particular, in advertising – the existence of such a situation not having been established in the contested decision – the Court of First Instance applied a criterion other than the one laid down by Article 7(1)(b) of Regulation 40/94".

This wasn't sufficient to get the ECJ to overturn the CFI's ruling, since there were so many other grounds upon which it could have been justified.

The IPKat feels that ECJ jurisprudence on distinctive character is finally starting to stabilise and become more predictable, at long, long last ...

...it's the second edition of Intellectual Property Law by Lionel Bently and Brad Sherman. Published this summer by Oxford University Press. With more than 1,200 pages (inclusive of prelims and index), this popular text book looks set to capitalise on the success of the first edition. Bently, who has taken up the Herchel Smith Chair in Intellectual Property Law at Cambridge, and Sherman, a Professor at Griffith University, Brisbane, have combined to produce a work which is surprisingly accessible, despite its detail and its erudition. The text also leads the reader gently from "pure" IP law to adjacent areas of interest such as competition law. Students will enjoy the clear and helpful explanations of the law, while practitioners will appreciate the depth and quality of the referenced source materials. Well done, Lionel and Brad!

It’s only just over two months until Christmas/Chanukah so it’s time to start thinking what to get that special trade mark lawyer in your life. Luckily the IPKat is here to take the effort out of festive purchase decision-making. Your feline friend heartily recommends this year’s winner of the fashion category of the Dutch Design awards (viewable here, click on Bling Bling at the bottom of the page) At only 249 Euros, Bling Bling, available from Tjepkema Studios, is a medallion made up of layer upon layer of famous trade marks. What’s more, it’s jewellery with a social conscience. According to the website:

“Bling Bling is part of Thingness, a body of work in which my main objective is to explore the social behaviour of things”.

Wednesday, 20 October 2004

The European Court of Justice handed down its decision yesterday in Case C-31/03 Pharmacia Italia SpA, a reference from the German Bundesgerichtshof on the transitional arrangements relating to the grant of supplementary protection certificates (SPCs) that extend the duration of protection for pharmaceutical patents. The problem was that SPCs can only be granted in respect of expired patents for products that first received market authorisations in Germany after 1 January 1988. Pharmacia's product, Cabergoline, received market authorisation in Germany for use as a medicine (DOSTINEX) in 1994, having been authorised within the Community (and therefore in Germany) as early as 1992. However, Cabergoline had already been authorised as a veterinary medicinal product (GALASTOP) in the Community back in 1987, as a drug for curing phantom pregnancies in dogs. Did the earlier veterinary authorisation preclude the grant of an SPC for the use of Cabergoline as a regular human medicine?

The ECJ ruled that Pharmacia was not entitled to the grant of an SPC. Said the Court:

"Whilst Pharmacia admits that the wording of Article 19(1) of the regulation refers in general terms to the first marketing authorisation in the Community without distinguishing between marketing authorisations for medicinal products for human use and veterinary medicinal products, it nevertheless submits that it follows from an examination of the regulation as a whole, its broad logic and purpose, that the regulation draws a distinction in principle between medicinal products for human use and veterinary medicinal products so that in the present case, the first marketing authorisation to be taken into consideration is that granted for the medicinal product for human use in the Netherlands" (para.17);

"Whilst noting that the term ‘first marketing authorisation in the Community’ must be interpreted in the same way in each of the provisions of the regulation in which it is used, it should be pointed out that, according to the sixth recital in its preamble, that regulation seeks to provide a uniform solution at Community level to the problem of inadequate patent protection, thereby preventing the heterogeneous development of national laws leading to further disparities which would be likely to create obstacles to the free movement of medicinal products within the Community. However, an interpretation such as that proposed by Pharmacia would prevent the realisation of that objective. Under Pharmacia’s interpretation, the duration of the protection conferred by the certificate, calculated in accordance with Article 13 of the regulation, might be different for the same product" (para.21).

The IPKat thinks this is right. SPCs are an exception to the basic principle that patent rights expire at a date no later than 20 years after the date of application for patent protection. Where further protection is granted, it should be granted on the basis of the firm but fair criteria laid down by the law.

The Guardian reports that MFI and Homebase, both UK DIY and home-improvement stores, are on tract to settle a bitter branding dispute out of court. In 2002, MFI contemplated taking over Homebase but the deal fell through. Nevertheless, Homebase persevered with plans to open furnishing stores within its branches named MI Home.

The IPKat says, if you plan to indulge in post-takeover rebranding, make sure you hold fire til you’re 110% such that the deal is going ahead.

Ilanah has written an article on the recent UK Electrocoin case, which deals with (i) whether they symbols used in games machines are registrable as trade marks and (ii) whether their use of other games machines counts as infringement. If anybody would like a copy please email theipkat@yahoo.co.uk. All comments, however critical, greatly appreciated.

Tuesday, 19 October 2004

Another House of Lords decision last week was Sabaf SpA and others v MFI Furniture Centres Ltd and others.

Sabaf owned a UK patent for a burner for gas cookers and hobs. Meneghetti, an Italian company, made a similar product which it sold to MFI, a furniture retailer in the UK, arranging the transportation itself. The trial judge held that the two important features of Sabaf's burner which allegedly constituted an invention were both obvious in the light of prior art. What's more, while there was no item of prior art that taught both of those features, the "law of collocation" -- the principle that it is obvious if you stick A and B together and get A + B, but nothing else -- rendered the patent obvious. The Court of Appeal reversed the judge's finding: in its opinion the "law of collocation" (which is not mentioned anywhere in the Patents Act 1977) was an illegitimate gloss on the Patents Act 1977 s.3. However, the Court of Appeal rejected Sabaf's submission that Meneghetti had infringed the patent by importing the goods into the UK by arranging for their transportation. Meneghetti appealed against the decision that Sabaf's patent of was valid, while Sabaf cross-appealed in respect of the court's finding that Meneghetti had not infringed the patent.

The House of Lords, citing British Celanese Ltd v Courtaulds Ltd (1935) 52 R.P.C. 171, stated that the Court of Appeal's approach to the law of collocation was contrary to well-established principles, both in England and in the European Patent Office. There was no "law of collocation" in the sense of a qualification of, or gloss upon, or exception to, the test for obviousness set out in s.3 of the 1977 Act. However, before establishing whether any invention involves an inventive step, onew must decide what that invention was. In particular, it has to be decided whether one or two or more inventions are in play. Two inventions don't become one invention just because they are included in the same hardware.

As to infringement, it could not be said that, by arranging the transportation of its goods to MFI in England, Meneghetti had imported those goods into the UK. Meneghetti's customer had been the importer. The Court of Appeal was therefore right to hold that infringement had not been established.

The IPKat thinks it a real weakness that appeals from judges who real patent experts, like Sir Hugh Laddie, are allowed to be heard by such judicial babes-in-arms (from a patent point of view) as the three Court of Appeal judges in this case. Skilled patent counsel such as Simon Thorley QC must relish the opportunity to practise their persuasive arts before them. At least the House of Lords fielded a team with some patent expertise.

Last week the House of Lords clarified the law on interim injunctive relief to protect allegedly confidential information when it gave its ruling in Cream Holdings and other v Banerjee and others.

Banerjee, an ex-employee of Cream, passed confidential information to a local newspaper, the Liverpool Echo, which had published some articles relating to Cream. Cream sought injunctive relief to stop the Echo publishing any further confidential information. The trial judge granted an interim injunction on the basis that Cream had established that it had a "real prospect of success" at trial, thereby satisfying the test of there being a likelihood that a permanent injunction would be granted, which was necessary if the reportage of allegedly public interest information was to be suppressed under the Human Rights Act 1998, section 12(3).

On appeal, Banerjee and the Echo argued that the judge had applied the wrong test under s.12(3). A "real prospect of success" could exist even if that prospect was only a 10% chance. He should, they said, have applied a test of Cream being "more likely than not" to get a permanent injunction. The Court of Appeal dismissed their appeal: in the opinion of a majority of that Court, the trial judge had given the correct interpretation to "likely" in s.12(3). Banerjee and the Echo appealed further to the House of Lords, which allowed their appeal.

The House of Lords considered that the purpose of s.12(3) was to emphasise the importance of freedom of expression even at the interlocutory stage of litigation. It set a higher threshold for the grant of interim injunctions against the media than the American Cyanamidguideline of there having to be a "real prospect of success" at trial. However, "likely" could not have been intended to bear the meaning originally contended for by the Echo, that of being "more likely than not": that would set the degree of likelihood too high and would not be workable in practice.

Their Lordships ruled that there could be no single, inflexible standard governing all applications for interim restraint orders. The necessary degree of flexibility was achieved on a construction of s.12(3) that required an applicant's prospects of success at trial to be sufficiently favourable to justify such an order being made in the particular circumstances of the case. As a general approach, courts should be very slow to make interim restraint orders where the applicant had not demonstrated that he would probably succeed at trial. However, some cases would require a departure from that general approach, and in those cases a lesser degree of likelihood would suffice.

The IPKat accepts that the decision to allow the appeal and to set aside the iterim injunction was right on the facts of the case. He is however dismayed that, instead of any sort of crisp, clear legal guidance, the House of Lords has fallen back on the old routine of "It all depends on the facts, in all the circumstances". This is an invitation to litigants to carry on litigating in any and every case where the circumstances are not crystal clear.

The IPKat has received the following from Susy Scardocchia, a legal assistant with the First Board of Appeal, OHIM:

"I was reading The Guardian and came across this article about the Marlon Brando estate allegedly having filed an application to protect Marlon Brando's "name and image" as a trade mark before the USPTO. I checked on the USPTO website and there was the application, under No. 78462068, filed on 4 August 2004. It is a mere word mark, covering the words MARLON BRANDO.

The article, on the other hand, seems to imply that not only was the actor's name filed as a trade mark, but that his "image" and/or "likeness" are now protected as well. This is deceptive journalism. I think the public should be entitled to know that whoever wants to dress up like M.B., or copy M.B.'s style, is still free to do so, and will always be able to do so, because an "image" or a "style" are not capable of operating as trade marks and therefore cannot be registered as such".

Ms Scardocchia has touched on a sensitive issue on which US and EU attitudes may be more than a little divided. Tennessee, for example, prohibits unauthorised invididuals from getting up on stage and impersonating Elvis Presley. The IPKat invites your comments, please.

Ananova gives an account of the successful breeding of giant guinea pigs for human food. Peruvian researchers, having sought their quarry for the past 34 years, have now developed a large nutritious guinea pig that weighs in at around a kilo.

The meat of the jumbo guinea pig is high in protein and low in fat and cholesterol, like rabbit -- but the guinea pig has tiny little legs, which make it hard for it to escape a hungry IPKat ..

Chinese patent for the feeding up of American guinea pigs hereEven bigger guinea pigs here, both dead and aliveOther valuable intellectual property from darkest Peru here

On a recent visit to Oxford, the city of dreaming spires and the home of Oxford University Press, the IPKat picked up a charming little book that does not seem to have received much publicity among intellectual property enthusiasts. Entitled Intellectual Property Rights, External Effects and Anti-trust Law, it is an objective version of what must surely be Ilkka Rahnasto's account of how, with a big enough portfolio of IP rights, a company such as Nokia can force its way into the lucrative US telecommunications market. Don't be put off by the fact that Rahnasto is a lawyer with Nokia: the book is a well-written and scholarly account of the subject, with well-referenced discussion of both US and EU law. What a shame it is not better known within the IP field.

The Daily Telegraph reports that the State of Texas is keen to protect its trade mark rights in the slogan “Don’t Mess with Texas”. The phrase, coined by the Department of Transportation as part of its campaign against roadside litter, has proved popular since its introduction. Texas is now bringing proceedings against 30 companies, including the producers of "Don't Mess With Texas Women" bumper-sticker and University of Texas T-shirts proclaiming "Don't Mess With Texas Longhorns".

"We're very concerned that the value of our slogan has been devalued…The state of Texas has this brand and we want people to know what it means" said Doris Howdeshell, the director of the department's travel division.

The IPKat says, in this case imitation may be the sincerest form of flattery, particularly if Texas wants to encapsulate the essence of the State, rather than create a hollow catch-phrase.
Other things not to mess with here, here and here

Monday, 18 October 2004

We have all become used to the sight of health warnings on packets of cigarettes and on their advertising literature, remind us quite how bad the leading brands can be for our health and well-being. Now, according to Ananova, it's the turn of the Demon Drink. Newcastle Brown Ale and its Scottish Courage sister brands, including John Smith's bitter and Fosters and Coors, which brews Carling and Grolsch lagers, will introduce a similar policy next year and other brewers are expected to follow suit.

The IPKat notes that the major tobacco brands came through similar exercises surprisingly unscathed but wonders whether the fact that some brewers will be danger-labelling their brands while others won't is going to provide an effective control group for the purpose of comparing the long-term performance of brands that warn against brands that don't.

Sunday, 17 October 2004

... The October 2004 issue of Managing Intellectual Propertycontains the usual array of fascinating content. It's an Asia-Pacific special, with a big lead feature on IP enforcement tactics in China. Other topics include

* "The Trouble with IP": in an exclusive interview, Nobel Prize winning economist Joseph Stiglitz explains why he thinks that IP rights should be scaled back and

* "The Truth About Business Method Patents in Europe" by David Barron and Alexandra Brodie (Wragge & Co), which shows significant patenting activity in Europe's Forbidden Sector.

Saturday, 16 October 2004

* From the BBC – Mr Justice Blackburne has granted an order in favour of the British Phonograph Industry ordering ISPs to identify certain downloaders. The IPKat says so far the BPI has only won a single battle against UK downloaders. It’s yet to win the war.

* From RBC – the Russian Prime Minister has announced that the Science and Education minister has submitted proposals on improving the existing laws on the protection of intellectual property to the Russian Government. The IPKat says watch this space for more information as and when it becomes available.

* From Inter Press – in a resolution passed by the WIPO General Assembly, WIPO has agreed to establish a “development agenda”. Although developing countries are claiming that this is a major victory, the IPKat is wont to take such broad declarations with a pinch of salt until they are backed up by substantive action.

Friday, 15 October 2004

Last Thursday the ECJ provided further guidance on how to judge whether shape marks are distinctive. Though the IPKat briefly noted the case, here’s a bit more detail. Mag applied to register five shapes of torch as Community trade marks for flashlights, lighting and accessories for those goods. The examiner found the marks to be devoid of distinctive character, as did the Board of Appeal. Mag unsuccessfully appealed to the CFI, following which it appealed to the ECJ, arguing in particular that the high quality of the design of its torches, and the fact that many shaped goods were available on the market would cause consumers to view the shape of its torches as distinctive. Mag also argued that there were flaws in the way that the CFI treated the evidence of distinctiveness that it presented.

The ECJ dismissed the appeal:

* Instead of separating the marks in question into their component parts the CFI had considered the overall impression given by each of the marks. Thus Mag’s contention that the CFI had failed to assess the distinctiveness of each mark seen as a whole was not well founded.

* Mag’s argument that that the mere fact that a shape was a “variant” of a common shape of a type of product was sufficient for it to be distinctive under Art.7(1)(b) of the CTM Regulation was flawed. Although the criteria for assessing the distinctive character of three-dimensional marks consisting of the shape of a product are the same as those that apply to other categories of trade marks, consumers are not used to making assumptions about the origin of a product on the basis of its shape and so as a matter of consumer perception shapes may be less likely to be seen as trade marks than word of figurative marks. Thus, the more closely the shape applied for resembles the shape most likely to be taken by the product in question, the greater the likelihood that the shape will be devoid of distinctive character. Only marks which depart significantly from the norm or customs of the sector, and which therefore fulfil the essential function of indicating origin, will not be devoid of distinctive character.

* Contrary to Mag’s argument, the CFI had not taken the view that consumers would, as a matter of principle, fail to recognise the shape of goods as an indication of their origin.

* Mag’s argument that the wide variety of designs leads consumers to notice the shape of goods and thus the variations that may arise in the design of goods of different origins was inadmissible because it sought to have the ECJ substitute its own appraisal of the facts and evidence for that of the CFI.

* Although the assessment for the purposes of Art.7(1)(b) must be carried out in relation to the presumed expectations of the average consumer, evidence based on the actual perception of the mark by consumers may, in certain cases, provide guidance as long as that evidence shows that consumers did not need to become accustomed to the mark through the used made of it. Instead, it must have immediately enabled them to distinguish the goods or services bearing the mark from the goods or services of competing undertakings. The CFI did not fail to take into account the evidence of the actual perception of consumers. However the evidence presented only focused on consumer perceptions after the torches in question had been on the market for many years and when consumers were therefore accustomed to their shape. Also, Mag itself had accepted that the evidence could have related to consumer perception that was caused by use in the trade.

* The CFI could hold that the evidence presented only showed that the marks in question may have become distinctive in consequence of the use which had been made of them without distorting the evidence.

* The CFI had not failed to take into account Mag’s evidence that the torches possessed distinctive character because of the functional and aesthetic qualities of their shapes and their atypical designs. It had considered these features of the torches but had not considered them sufficient to confer distinctiveness on the marks. Instead, the CFI found that the evidence as to the excellence of the design and aesthetic and functional qualities of the torches showed that the marks might only become distinctiveness because of the use made of them rather than that they possessed distinctive character ab initio.

* The CFI was not bound to agree with the evidence of the expert appointed by Mag. Instead it was entitled to undertake its own appraisal of the distinctiveness of the marks in question.

* The fact that the design of the torches enjoyed international recognition as a result of its high quality did not mean that the marks were distinctive ab initio.

* The CFI was entitled to refuse to hear the author of the expert’s report produced by Mag. The CFI is the sole judge of any need for the information available to it concerning the cases before it to be supplemented and this matter cannot be reviewed by the ECJ unless there is the clear sense that evidence has been distorted or the substantive inaccuracy of the CFI’s findings is apparent from the documents in the case file. In this case, the CFI, by deciding that it was not necessary to hear the expert witness for the purpose of appraising the distinctive character of the marks, did not infringe Mag’s right to be heard.

* The CFI’s failure to take into account other evidence produced by Mag in which it claimed to show that other manufacturers use a very wide variety of torch shapes and that the marks in question can be clearly distinguished from all those shapes could not be challenged in the absence of any evidence of distortion of the facts or evidence as it would involve challenging the CFI’s appraisal of the facts.

* Mag was wrong to argue that the CFI contravened Art.7(1)(b) by basing its reasoning in finding that the marks lacked distinctiveness only on general propositions which were unsupported by any evidence. The CFI’s position that consumers were not used to viewing the shapes of goods as distinctive of their origin and therefore that it was harder to show that three-dimensional marks were distinctive could not be challenged in so far as it was a finding of fact. In any event. The CFI’s findings were supported by evidence and its appraisal of the facts could not be reviewed unless the facts or evidence submitted to the CFI had been distorted.

The IPKat says that there are no real surprises in this case. However, one notable point to come from this case is that the ECJ has quantified exactly how different from other shapes on the market a three-dimensional mark must be to be distinctive.

The US Department of Justice (DoJ) wants tough new antipiracy powers according to ZDNet. On Tuesday the DoJ issued a report calling for the power to conduct wiretaps when investigating serious intellectual property offences and the creation of a new offence of importation of pirated material. Most dramatically, the DoJ is also calling for FBI agents to be stationed in Budapest and Hong Kong to help local officers and to provide training on enforcement.

"The department is prepared to build the strongest, most aggressive legal assault against intellectual-property crime in our nation's history," said Attorney General John Ashcroft. Readers will note that he hasn't limited his comments to copyright, and indeed, there are recommendations concerning trademark infringements, trade secret violations and fake pharmaceuticals.

The IPKat is amazed by the lengths to which the DoJ is going to make IP infringement a criminal rather than civil matter but he's even more stunned at the thought of US officials being stationed abroad for the cause of IP. He wonders what the countries that are thought to need such "assistance" will make of the plans.

Thursday, 14 October 2004

Correspondent Glyn Williams of Derby has written to New Scientist, asking:

"When condensation forms on a clean bathroom mirror, you can draw pictures in it. When the condensation evaporates, the pictures disappear. But when it forms again, they reappear. Why?"

The IPKat, conscious as ever of the intellectual property dimension of apparently unrelated phenomena, wonders whether the tracing of a disappearing/reappearing image in condensation on a mirror is sufficient to vest an original artistic work under the Copyright, Designs and Patents Act 1988 with copyright protection. Under section 3 of that Act, literary, dramatic and musical works must be fixed in writing or some other material form, but the same proviso does not explicitly apply to artistic works.

Scientific answers to Mr Williams' questions will eventually be found on New Scientist'sThe Last Word page. But answers to the IPKat's questions should be posted below, please!

... but the Intellectual Property Institute (IPI) is co-presenting a most attractive half-day seminar on Thursday 28 October entitled "Copyright Ownership", along with BLACA, the British Literary and Artistic Copyright Association (whose website is also strangely silent about it). This seminar, chaired by veteran copyright expert Jack Black, features three of the most knowledgeable speakers in the field: Professor Paul Torremans, barrister Michael Edenborough (Hogarth Chambers) and Professor John N. Adams (Department of Law, University of Sheffield). Details are available from Anne Goldstein.

Wednesday, 13 October 2004

The IPKat was a confused cat, as you’ll see from his Tuesday translation watch, despairing at the lack of an English translation of Aventis v OHIM. However, his readers came to the rescue. Darren Smyth of Marks & Clerk writes:

"The case rejects an opposition by Aventis to the registration by BASF of the mark CARPO in respect of fungicides, herbicides, insecticides and pesticides, based on Aventis's earlier mark HARPO Z registered in respect of preparations for the elimination of vermin; fungicides, herbicides.

The CFI agreed with OHIM that the marks were not similar, both because of the different initial letters, and because of the presence of the "Z" in the earlier mark. Aventis argued that the Z would be perceived as an incidental element, indicating one product in particular in a family of products. The CFI disagreed, saying that the"Z" contributed to a significant degree to the distinctiveness of the mark. The fact that Aventis had included it in the mark as applied for supported this conclusion.

Visually, the CFI agreed with OHIM that the initial letter and the Z carried more weight than the "ARPO" element of the mark. Phonetically, the marks were also considered different, both because of the difference in the sound of the initial letters (H is silent in Spanish; C is pronounced K in this circumstance), and because of the Z (which is pronounced "theta" in Spanish, so has quite a dominant effect). The previous cases referred to in para 14 of the judgment (Petit Liberto (Fifies), FUNK/JUNK,and UFO/GUFO) were distinguished).

OHIM had also argued that the marks were dissimilar because CARPO meant "wrist" (as in carpal bones), while HARPO Z had no meaning. The CFI doubted that a significant number of people would discern the meaning of "wrist" in CARPO, but nevertheless felt that the marks were dissimilar for the other reasons given".

Thanks as well to David Landau, who also responded to the IPKat’s call.

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